Complainant is International Business Machines Corporation, United States of America (“U.S.”), represented by Jenny Greisman, U.S.
Respondent is New Ventures Services, Corp., U.S. / Web.com Holding Account, Abuse, Web.com, U.S.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on November 18, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 18, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 10, 2021.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on December 16, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundComplainant owns and has owned trademark registrations for the IBM mark in 131 countries all around the world for several decades. Complainant owns the following registrations for the IBM mark in the U.S., where Respondent apparently is located:
Registration No. 4,181,289 registered on July 31, 2012 in International Classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35, and 41;
Registration No. 3,002,164 registered on September 27, 2005 in International Class 9;
Registration No. 1,696,454 registered on June 23, 1992 in International Class 36;
Registration No. 1,694,814 registered on June 16, 1992 in International Class 36;
Registration No. 1,243,930 registered on June 28, 1983 in International Class 42;
Registration No. 1,205,090, registered on August 17, 1982 in International Classes 1,7, 9, 16, 37, and 42;
Registration No. 1,058,803, registered on February 15, 1977 in International Classes 1, 2, 3, 4, 7, 9, 10, 16, 28, 37, 41, and 42; and
Registration No. 640,606 registered on January 29, 1957 in International Class 9.
Complainant is a designer and manufacturer of a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories.
In 2021, Complaint was ranked the 15th most valuable global brand by BrandZ, the 18th best global brand by Interbrand, the 42nd largest company on the Fortune U.S. 500 list, and the 121st largest company on the Fortune Global 500 list. The IBM mark was valued by BrandZ as worth over USD 83 billion in 2020, USD 86 billion in 2019, and USD 96 billion in 2018.
Complainant has been offering products under the IBM mark since February 14, 1924.
Numerous prior WIPO panels have concluded the IBM mark is famous. See, International Business Machines v. Niculescu Aron Razvan Nicolae, WIPO Case No. DRO02010-0003, the panel concluded that Complainant’s “trademark is well-known around the world . . . and is registered for decades. Also, the IBM trademark is distinctive and therefore it is difficult to imagine someone randomly choosing three letters composing the trademark to register as a domain name, especially in light of the lack of Response in this case.” A panel concluded in another decision “[IBM’s] trademark is well-known around the world, representing the abbreviation of its trade name.” See International Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. DRO2010-0004. A panel stated in another decision “the ‘IBM’ . . .letter trademark[] [is] used by [one] of the world’s largest industrial corporations and without doubt [is] ‘well-known’ within the meaning of Article 6bis of the Paris Convention.” See Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited,WIPO Case No. D2000-1001.
The disputed domain name was registered on April 12, 2021. At the time of filing the Complaint, the disputed domain name resolved to a site displaying pay-per-click links.
5. Parties’ Contentions A. ComplainantComplainant spends over USD 1 billion annually marketing its goods and services globally, using the IBM mark, and has undertaken extensive efforts to protect its name and enforce the IBM mark. Complainant exerts careful control over use of the IBM mark and imposes strict quality control measures over goods and services offered in connection with the mark. Complainant further protects its brand and the IBM mark by diligently pursuing infringers of the IBM mark.
The disputed domain name is identical or confusingly similar to Complainant’s registered IBM mark. The disputed domain name consists of the letters “is” (not case sensitive), followed by the letters “ibm” (not case sensitive), and the generic suffix “.org.” The letters “ibm” contained in the disputed domain name are exactly the same as the IBM mark. The only difference is the addition of the letters “is”, which can stand for the term information services or information systems. Furthermore, “is” can be considered as the common verb “is” and used in combination with IBM consumers can be misled into believing it “is” an IBM domain name. This minor variation does not obviate the confusing similarity between the disputed domain name and the IBM mark.
Respondent has not been licensed, contracted or otherwise permitted by Complainant in any way to use the IBM mark or to apply for any domain name incorporating the IBM mark, nor has Complainant acquiesced in any way to such use or application of the IBM trademark by Respondent. There is no evidence that “isibm” is the name of Respondent’s corporate entity, nor is there any evidence of fair use. There is no evidence that Respondent is using or plans to use the IBM mark or the disputed domain name incorporating the IBM mark for a bona fide offering of goods or services.
Respondent has been actively using the IBM trademark in the disputed domain name to promote its website for illegitimate commercial gains. Such unauthorized use of the IBM mark is likely to trick consumers into erroneously believing that Complainant is somehow affiliated with Respondent or endorsing its commercial activities, while in fact, no such relationship exists.
The only difference between the disputed domain name and the IBM mark is the addition of the term “is.” Since the disputed domain name is comprised of the IBM mark and the addition of the term “is”, a presumption of bad faith against Respondent must be found.
Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name on April 12, 2021, at least 63 years after the Complainant established registered trademark rights in the IBM mark. Complainant’s marks are well known around the world. Complainant relies on the extensive range of registered trademarks for IBM to which references have already been made. This is proof of bad faith at the time of registration.
In the present case, the disputed domain name is confusingly similar to Complainant’s IBM mark, and Respondent has no relationship to Complainant or the IBM mark. Therefore, Respondent has registered the disputed domain name in bad faith.
Complainant sent a cease and desist letter to Respondent at the email address listed in the Whois information on August 16, 2021, asking Respondent to disable and transfer the domain name back to Complainant. Complainant also sent a follow up letter to Respondent on August 30, 2021. Respondent did not reply to Complainant’s letter from August 16, 2021 or August 30, 2021, further showing bad faith on Respondent’s part.
Respondent continued to use the disputed domain name for illegitimate commercial gains via hosting pay-per-click content even after receiving a cease and desist letter from Complainant regarding the use of Complainant’s mark.
Respondent has been using the IBM mark in the disputed domain name to promote its website for illegitimate commercial gains. Specifically, Respondent has been intentionally attempting to create a likelihood of confusion by pointing the disputed domain name to a pay-per-click parking page with advertisement links containing references to the IBM mark, as well as products and services in connection with which the IBM mark has been, or is being, used.
Respondent’s misuse of the disputed domain name is clear evidence of bad faith, because generating more traffic will result in more money for Respondent. It also creates a likelihood of confusion as to the relationship between Complainant and Respondent, as well as the source, sponsorship, or endorsement of Respondent’s websites and/or goods and services.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant has demonstrated it owns the registered trademark rights in the globally famous IBM mark in the U.S. and throughout the world. The addition of the term “is” to the disputed domain name does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).
Accordingly, the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate InterestsComplainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name; has not at any time been commonly known by the disputed domain name; and is not making a legitimate noncommercial or fair use of the disputed domain names. Complainant has also presented prima facie evidence that Respondent is using the disputed domain name to resolve to a website that contains pay-per-click links for products which are competitive of Complainant as well as products that are advertised as Complainant’s goods. Such use to capitalize on the reputation and goodwill of Complainant’s mark does not represent a bona fide offering of goods or services. See section 2.9 of the WIPO Overview 3.0.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Here, Respondent has provided no response, nor evidence of any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithTo establish the third UDRP element, Complainant is required to prove the disputed domain name was registered and is being used in bad faith.
Complainant’s basis for claiming Respondent’s registration in bad faith rests on the fact the IBM mark is globally famous and distinctive and a registration of a domain name which incorporates its famous IBM mark infers registration in bad faith. Respondent has not provided any counterargument to Complainant’s assertion thus the Panel finds that the Registrant registered the disputed domain name in bad faith given that it contained such a famous mark as IBM. See section 3.1.4 of the WIPO Overview 3.0.
Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Complainant has submitted evidence that the disputed domain name resolves to a parking page that contains pay-per-click links to both Complainant’s goods as well as those of its competitors. This parking page appears to have been created by the registrar of the disputed domain name. However, the fact that these links were generated by the registrar or auction platform does not prevent a finding of bad faith. Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912, is instructive. In that case, the panel wrote: “…Respondent states that he has not received any money or discount from the website. However, these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the Disputed domain name, and had the power to instruct the Registrar to remove the parking page.”
Here, the Complainant sent two letters to the Respondent which were ignored, and the Respondent continued to leave the disputed domain name active. Respondent also declined to address the Complaint. The silence on the part of Respondent is deafening.
In this case Complainant has provided evidence that the disputed domain name contained links to Complainant and its competitors. Absent any rebuttal from Respondent, the Panel finds this use was in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name,
Colin T. O’Brien
Sole Panelist
Date: December 30, 2021